20th Apr 2007
National Arbitration Forum
Tomsten Inc. v. Registrant  a/k/a Star Access Inc. (SAI) Domains
Claim Number: FA0702000925448
Complainant is Tomsten Inc. (“Complainant”), represented by Eric D. Paulsrud, of Leonard Street and Deinard, 150 South 5th Street, Suite 2300, Minneapolis, MN 55402. Respondent is Registrant  a/k/a Star Access Inc. (SAI) Domains (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <archivers.com>, registered with Moniker Online Services Inc.
The undersigned certifies that they acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
The Honourable Neil Anthony Brown QC, Alan L. Limbury and Joel M.Grossman as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 26, 2007; the National Arbitration Forum received a hard copy of the Complaint on February 27, 2007.
On March 2, 2007, Moniker Online Services Inc. confirmed by e-mail to the National Arbitration Forum that the <archivers.com> domain name is registered with Moniker Online Services Inc. and that Respondent is the current registrant of the name. Moniker Online Services Inc. has verified that Respondent is bound by the Moniker Online Services Inc. registration agreement and has thereby agreed to resolve domain name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 8, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 28, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on March 28, 2007.
A timely Additional Submission was received from Complainant on April 2, 2007 in accordance with the Forum’s Supplemental Rule 7.
A timely Additional Submission was received from Respondent on April 9, 2007 in accordance with the Forum’s Supplemental Rule 7.
On April 6, 2007, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC, Alan L. Limbury and Joel M.Grossman as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following contentions:
Complainant alleges that the contentious domain name <archivers.com> should no longer be registered with Respondent but that it should be transferred to Complainant.
It contends that this should be done because, within the meaning of Policy ¶ 4(a), the domain name <archivers.com> is confusingly similar to Complainant’s registered trademark ARCHIVER’S, that Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and subsequently used in bad faith. Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to Complainant.
In support of its case on the first of these three elements, Complainant relies on its registered ARCHIVER’S trademark, evidence of which is provided in the Complaint. It then says that the domain name <archivers.com> is confusingly similar to the ARCHIVER’S mark, because the only difference between the two is that the apostrophe in the trademark is omitted from the domain name and that domain names which include such a slight variation from a distinctive trademark have consistently been held by UDRP panels to be confusingly similar to the trademark.
Complainant then contends, to establish the second element, that Respondent has no rights or interests in the domain name <archivers.com> because the facts show that Respondent is using the domain name to resolve to a website offering links to companies that compete with Complainant’s business, presumably for commercial purposes and that such conduct does not give rise to a right or legitimate interest in the domain name as it is not a bona fide offering of goods or services within Policy ¶ 4(c)(i) or a legitimate or fair use under Policy ¶ 4(c)(iii). Moreover, Respondent is not commonly known by the <archivers.com> domain name and therefore has not established a right or legitimate interest in the domain name pursuant to Policy ¶ 4(c)(ii).
Finally, Complainant contends that the domain name <archivers.com> was registered and is being used in bad faith. It contends that this is so because, first, the domain name resolves to a website featuring links to competing websites and such conduct has regularly been held by UDRP panels to be bad faith registration and use as a disruption of Complainant’s business within Policy ¶ 4(b)(iii). Secondly, it is contended that the registration and use of the domain name is in bad faith pursuant to Policy ¶ 4(b)(iv) because such use of the domain name is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered on the site. Thirdly, it is contended that as Respondent changed the registrant information for the domain name to the current registrant when the UDRP Complaint was first served on it, Respondent has engaged in “cyberflying” with the intention of disrupting the proceedings, which is itself evidence of bad faith.
Respondent denies that Complainant has proven any of the three elements that it must establish under Policy ¶ 4(a).
It contends, first, that the domain name is not identical or confusingly similar to Complainant’s trademark because the omission of the apostrophe from the domain name, although it is a minor difference from the trademark, is nevertheless a significant one because the ARCHIVER’S trademark is a mere descriptive term and in such cases minor differences of this sort are sufficient to negate a finding of confusing similarity.
Secondly, it is contended that Respondent has rights and a legitimate interest in the domain name because it registered what is a common word and without any knowledge of Complainant or its trademark; those circumstances have regularly been held by UDRP panels to confirm a right and legitimate interest in the domain name. Moreover, Respondent has a further legitimate interest in the domain name as it has used it in connection with a web-based e-mail service. More recently, Respondent has used the domain name to host pay-per-click advertising links as part of a domain monetization service, which is itself a legitimate interest.
Thirdly, Complainant contends that registering a common word as a domain name, as the Respondent has done, does not constitute bad faith registration under the Policy. Moreover, although the domain name is used to generate traffic to other Internet sites, the specific links generated by the monetization service are not controlled by Respondent and cannot therefore be used to infer bad faith on the part of Respondent.
Respondent also contends that the Complaint is unmeritorious because it has been brought seven years after registration of the domain name and after several offers by Complainant to buy the domain name, indicating that Complainant has not regarded its claim as warranted.
C. Additional Submission by Complainant
In a timely additional submission, Complainant alleges that the President of the Respondent company is a serial cybersquatter, a claim sought to be established by a lengthy history of his involvement in UDRP proceedings set out in the decision of the panel in Gaylord Entertainment Co. v. Nevis Domaina LLC, D2006-0523 (WIPO Sept. 6, 2006). From this history, Complainant argues that Respondent has demonstrated a “pattern of conduct” from which bad faith and impropriety must be presumed.
Complainant then takes issue with Respondent’s submission that the trademark is descriptive, thus rendering the similarity to the trademark less compelling. Complainant seeks to refute that submission by arguing that its trademark is not descriptive but suggestive and that it is identical to the domain name.
Complainant then contends that Respondent does not have a right or legitimate interest in the domain name because use of a third-party optimizer to select and supply pay-per-click advertising links does not legitimise what is an illegitimate trading on the good will of Complainant’s trademark.
Complainant finally contends with respect to Respondent’s argument that even if it used the domain name in bad faith, it was registered in good faith, that in the case of the present Respondent its strategy has been the illegitimate registration of domain names. Moreover, the wording of the Policy justifies a finding of bad faith registration and use where Policy ¶ 4(b)(iv) has been infringed, as in the present case.
D. Additional Submission by Respondent
In a timely submission, Respondent contends in reply to the allegations concerning the President of Respondent, that his business is legitimate and that all he has done is to register generic names for Respondent’s DotComEmail service, which is a legitimate activity. If Complainant’s intention in raising these matters is to show a “pattern” of registrations to make out a case of bad faith under Policy ¶ 4(b)(iv), it cannot do so, as Respondent had no basis for knowing of Complainant and registered the domain name when Complainant’s business had scarcely started and at a time that its trademark could not have been well known. Finally, on the issue of bad faith Respondent says that the Policy requires proof of both bad faith registration and use and that this has not been established.
Complainant is the owner of the service mark registered with the United States Patent and Trademark Office (“USPTO”) being Trademark number 2,413,711 registered on December 19, 2000 for ARCHIVER’S (‘the trademark’).
Respondent registered the <archivers.com> domain name on December 13, 1999.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
The Panel finds that the disputed domain name is virtually identical to Complainant’s registered trademark ARCHIVER’S. That is so because, with one minor exception, both words are spelled the same and are pronounced the same and they are in substance the same word. The exception, of course, is the apostrophe in the trademark, which is not in the domain name. But that minor discrepancy does not distinguish the domain name from the trademark either sufficiently or at all, as the reasonable bystander, asked to make a comparison between the two, would undoubtedly say that the goods and services encompassed by the domain name are the same as those encompassed by the trademark.
In any event, if such minor variations had to be taken into account, the comparison would not be a real one, for they cannot be included in domain names. This is one reason why UDRP panels have consistently held that the omission of an apostrophe does not negate identicality which has been otherwise made out, as is seen for example in the decision cited by Complainant. See Chi-Chi’s Inc., v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000).
As the domain name and the trademark are virtually identical, the requirement in Policy ¶ 4(a)(i) is satisfied, as virtual identity is sufficient under the Policy. See The Stanley Works and Stanley Logistics Inc. v. Camp Creek Co., Inc., D2000-0113 (WIPO Apr. 14, 2000); see also Nokia Corp. v. Nokiagirls.com, D2000-0102 (WIPO Apr. 20, 2000); see also Am. Online, Inc. v. Chan, D2001-0004 (WIPO Feb. 27, 2001); see also Disney Enters., Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, D2001-0489 (WIPO July 3, 2001); see also Komatsu Ltd. v. RKWeb Ltd., D2000-0995 (WIPO Nov. 23, 2000); see also Am. Online, Inc. v. Hind, D2001-0642 (WIPO July 1, 2001); see also The Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 17, 2001).
It is also noted that the domain name was registered on December 13, 1999, but the trademark was not registered until December 19, 2000, although the application for registration of the trademark was made on June 22, 1999. This case therefore raises again the question whether Complainant may bring the Complaint at all, as it did not have a valid trademark when the domain name was registered.
The answer to that question is that it has now been well established that, as the Policy only requires Complainant to show that it “has” rights in a trademark or service mark, the requirement is that Complainant “has” such rights at the time of filing the Complaint. See Nãofumomais, Clínica de Homeopatia Antitabágica, Lda. v. Re-Surgir – Consultores em Desenvolvimento Individual e Organizacional, Lda., D2004-0399 (WIPO Aug. 23, 2004); see also Valve Corp. v. ValveNET, Inc., D2005-0038 (WIPO Mar. 9, 2005). Clearly Complainant in the present case “has” such rights, as it had them by the time it filed its Complaint.
For all of these reasons the domain name is identical to the trademark and Complainant has thus made out the first of the three elements that it must establish.
No Rights or Legitimate Interests
Under Policy ¶ 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the disputed domain name. But by virtue of Policy ¶ 4(c), it is open to a respondent to establish its rights or legitimate interest in the disputed domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Thus, if Respondent proves any of these elements or indeed anything else that shows it has a right or interest in the disputed domain name, Complainant will have failed to discharge its onus and the Complaint will fail.
Respondent has sought to bring itself within Policy ¶ 4(c)(i) and to establish that it had at the relevant time a right or legitimate interest in the domain name.
The Panel concludes that Respondent has succeeded in doing so for the following reasons.
The first step in determining whether a respondent has made out a case under Policy ¶ 4(c)(i) is to decide when the respondent was given notice of the dispute. In the present case, the only evidence of when notice of the dispute was given to Respondent is the statement in the Complaint that “Respondent was served a copy of the UDRP complaint on February 26, 2007 at 4.59 p.m. CST.” Exhibit 9 to the Complaint establishes that the Complaint was served at that time and there is no evidence of any earlier time when notice of the dispute was given to Respondent.
Accordingly, the question is then whether, prior to February 26, 2007, Respondent used the domain name in connection with a bona fide offering of goods or services.
It is clear from an examination of the evidence that Respondent did so. In the first place, since the year 2005 Respondent has used the domain name for the purpose of carrying commercial advertisements and links on the Internet. That is shown by the Declaration of Jack Ford, the President of Respondent, made on March 27, 2007 and which is Exhibit 5 to the Response. In paragraph 4 of his Declaration, Mr. Ford says:
Starting in 2005, I began hosting the Disputed Domain with a domain name parking service, which placed pay-per-click (PPC) advertisements on web pages associated with domain names and shared the advertising revenues with the domain name owners. I first hosted the Disputed Domain with DomainSponsor.com, and then later with Hit.Farm. Domain parking companies place PPC ads on web sites based on the meaning of the term in the domain name, utilizing a software program to select the most relevant links.
The Panel next looked at Complainant’s evidence to see the advertisements being carried on the service so as to ascertain if those advertisements were for goods and services as is required if Policy ¶ 4(c)(i) is to be satisfied.
Paragraph 5 of the Complaint and Complainant’s list of exhibits says that Exhibit 8 is a “Screen capture of <archivers.com>.” Presumably this means that the exhibit shows what appears on the website to which the disputed domain name resolves. This is not correct, as it is reasonably clear that Exhibit 8 is a screen capture, not of the contentious advertisements carried on the Respondent’s website, but a shot of Complainant’s own website, which is at <archiversonline.com>.
Paragraph 5 of the Complaint and Complainant’s list of exhibits also says that Exhibit 6 to the Complaint is a “Screen capture of Archiver’s online site, archiver’sonline. com>.” Presumably this means that Exhibit 6 is a screen capture of Complainant’s website, as its online service is provided by means of the domain name <archiversonline.com>. That is also not correct, for Exhibit 6 is a shot of the website where Respondent’s domain name is hosted and where the contentious advertisements appear.
It is that website that must be examined if a conclusion is to be reached whether Respondent used the domain name for an offering of goods and services. The Panel therefore made its own inspection of the website and compared it with the goods and services being offered on Complainant’s website.
The website to which the disputed domain name resolves carries links to a broad range of commercial offerings. The Panel will have occasion later in this decision to refer to some of those advertisements and links in more detail, but for the present it need merely be said that they are clearly all advertisements and links for goods and services. Accordingly, Respondent’s domain name is currently being used in connection with an offering of goods and services and it is common ground that this has been the case since the year 2005.
Complainant, however, replies that this offering of goods and services is not bona fide because it contains “links to various companies that compete with Complainant’s business, presumably with the intent of receiving commercial gain.” Clearly, if this contention were established, Respondent would not be able to show that it had, within the meaning of Policy ¶ 4(c)(i), used the domain name for a bona fide offering of goods and services. That is so because it has been held on many occasions that if a domain name is used to display links to commercial operators who are in competition with the trademark owner and with the intention of diverting internet traffic from the trademark owner to its competitors, such a use of the domain name will not be regarded as bona fide. See duPont Publ’g, Inc. v. Domain Active Pty. Ltd., FA 137213 (Nat. Arb. Forum Feb. 5, 2003); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003); see also Alta Vista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000).
In the present case, however, the Panel concludes that the advertisements and links on Respondent’s website do not seem to have been chosen to divert business away from Complainant or to its competitors because in substance the advertisements and links do not relate to the same field of business as Complainant. The essence of Complainant’s business is the processing, conservation and presentation of photographs. This is made plain by Complainant’s own words on its website at <archiversonline.com>, words that are clearly intended to describe its business to the Internet visitor. It describes its business on the website in the following way: “Archiver’s. The Photo Memory Store, is your source for creative ways to organize, dis-play, and preserve your photographs.” (Emphasis added).
Likewise, the goods and services that Complainant offers are principally concerned with photographs. Thus its website offers a broad range of goods and services associated with photographs, methods of preserving “photo memory products,” color copying of photographs, preserving digital photographs, the Sony Picture Station photo finishing laboratory, incorporating photographs into holiday cards and such like, printing digital photographs, changing the size of photographs, editing and various methods of alleviating the bane of every amateur photographer’s life—the washed out and faded image and the out of balance result. All of these goods and services are intimately connected with photographs.
In contrast, the goods and services promoted through the disputed domain name <archivers.com> seem to have little to do with photographs and are not promoted to the photography market. The initial offerings when the site opens up are for stamps, direct marketing, stickers, name labels, scrapbooks, frames and many other goods and services, ranging as far, according to Complainant’s own evidence, as maps, Renting Villas in Croatia and eBay starter kits. What is clear is that the advertisements and links are not aimed at photographers or those working with photographs or who are trying to enhance, preserve or display them. Even when a search is made under “scrapbook materials,” a major area of Complainant’s activities, the result does not appear to produce anything on photographic scrapbook materials.
The panel does not suggest that none of the links promote goods and services that have any connection at all with photographs; what is clear to the Panel, however, is that the substance of the advertisements and links on Respondent’s site do not deal principally with the field in which Complainant conducts its business.
Nor does it appear that the companies providing the goods and services offered through the disputed domain name are in competition with Complainant and no evidence has been offered to that effect.
Moreover, it appears from an examination of the two websites that it is more likely than not that the pay-per-click monetization service has simply selected goods and services coming within the broadest generic meaning of the word ‘archivers’ rather than choosing goods and services offered by Complainant and also provided by rival organisations. Equally, the Panel is unable to draw the conclusion that Respondent or the monetization service have shown any intention of diverting internet traffic from Complainant to the firms promoted by the advertisements and links. Indeed, there is nothing on the website to show that they are even aware of Complainant.
The conclusion that the Panel reaches on this issue is that there is nothing to dislodge the conclusion that Respondent’s offering of goods and services was anything other than bona fide. Accordingly, Respondent has made out its case that within the meaning of
Policy ¶ 4(c)(i) it had a right or legitimate interest in the domain name.
The email address service
Even prior to its association with DomainSponsor.com and HitFarm.com, Respondent used the domain name to provide e-mail addresses and it says that this also gives rise to a legitimate interest in the domain name.
Mr. Ford verifies this activity in paragraph 2 of his Declaration where he states:
Between 2001 and 2003 I used the Disputed Domain in connection with DotComEmail .com, a web based email service I operated which provided users with free web based email accounts with personalized addresses at archivers.com and over 1300 other domain names.
Consistently with other UDRP decisions, the Panel finds that such a service gives rise to a legitimate interest in the domain name and of course an interest that, in the present case, was well established long before notice of the dispute was given to Respondent.
In this regard, the Panel endorses the decisions cited by Respondent and respectfully adopts the terminology used to state the principle in Empresa Municipal Promoción Madrid S.A. v. Easylink Services Corporation, D2002-1110 (WIPO Feb. 26, 2003), where the Panel said:
The Respondent demonstrated rights and a legitimate interest in the domain name in dispute as provided by paragraph 4(c)(i) of the Policy. The Respondent has offered e-mail accounts at numerous affinity domain names including several geographical areas, including <rome.com>, <london.com>, and <berlin.com>. In the circumstances of this case, the use of a domain name for the purpose of offering personalized addresses for an e-mail service establishes the Respondent’s legitimate interest under the policy (Buhl Optical Co. v. Mailbank.com, Inc., D2000-1277 (WIPO Mar. 8, 2001).
Complainant, however, in its Supplementary Submission disputes the applicability of that principle to the present case and relies in support of its contention on the decision in The Gillette Company v. S. A. Inc, FA 95892 (Nat. Arb. Forum Dec. 18, 2000), where, although the common word “foamy” was used in connection with a web-based e-mail service, the panel found that such a use did not create a legitimate interest and was in bad faith. That is literally correct, but the case is clearly distinguishable because it was held that FOAMY was the Complainant’s registered trademark, it had been in use for almost fifty years and was a famous mark. As the Panel said, “[a]nyone receiving email from a person with such an address may be lead to believe that the Complainant is offering e-mail services, or that the email may have originated from or is somehow sponsored by the Complainant.”
None of those remarks is applicable to the present case; ARCHIVER’S was not Complainant’s trademark until a year after the domain name was registered, it had apparently been in use for only a very short period of time and was not a famous mark.
But Complainant also relies on the observation of the panel in the Gillette case that “Given the Respondent’s history of domain name registrations, a reasonable person could conclude that the Respondent was aware of the Complainant’s mark prior to the registration of the domain name.”
This is a clear reference to Complainant’s further argument that Respondent’s President, Mr. Ford, is a “notorious cybersquatter” with a history of registering domain names regardless of whether they contain protected trademarks and using them for web-based e-mail services or parking them to generate advertising revenue. To advance this argument, Complainant relies heavily on the decision in Gaylord Entertainment Co. v. Nevis Domains LLC D2006-0523 (WIPO Sept. 6, 2006), where the history of these activities by Mr. Ford and his associates is dealt with at great length.
The difficulty in applying the statement in the Gillette case to the present case, however, is that no reasonable person could conclude that Respondent was aware of Complainant’s mark prior to the registration of the domain name, for there was no trademark registered at that time of which it could have been aware and because what Respondent was doing, in fact, was registering a common word over which there was no trademark.
The Panel emphasizes that this decision is based solely on the facts of the present case.
Mr. Ford is probably not a cybersaint, but on the facts there is no evidence from which an inference may properly be drawn that he personally or Respondent was aware of Complainant, its trademark application or its use of the word ARCHIVER’S as a mark at the time of the registration of the domain name. That is so because the evidence is that the disputed domain name was registered on December 13, 1999, whereas the ARCHIVER’S trademark was not registered until a year later, on December 19, 2000. Accordingly, Complainant had no trademark rights when Respondent registered as a domain name a word that is essentially generic in nature.
Moreover, Mr. Ford’s Declaration says that the name was registered because it is a common word and without any knowledge of Complainant or any intention to invoke Complainant’s name or trademark or confuse people. Not only is there no evidence to cast doubt on those statements, but the sequence of events, the totality of the evidence and the absence of any reference on Respondent’s website to Complainant or the products that are at the core of its business, make it inherently more probable than not that Mr. Ford’s version of events is correct.
Indeed, Complainant gave at least some acknowledgement of the legitimacy of Respondent’s position on May 5, 2003 by asking Respondent by -email, “[a]re any of the domain names at DotComEmail.com available for purchase” and then specifically offering to buy <archivers.com>.
For all of these reasons, the Panel concludes that Respondent has a right or legitimate interest in the domain name and Complainant has failed to make out the second of the three elements that it must establish.
Registration and Use in Bad Faith
In view of the Panel’s findings, it is not necessary to consider this issue.
Accordingly, the Panel concludes that relief shall be DENIED.
The Honourable Neil Anthony Brown QC
Alan Limbury Joel M Grossman
Dated: April 20, 2007
National Arbitration Forum